Proposed Changes to Federal Circuit Rules

Earlier this month, the Federal Circuit released a set of proposed amendments to the Federal Circuit Rules of Practice and Procedure that completely overhaul the existing rules. These changes are extensive, with the summary alone filling six pages. The bulk of the proposed amendments focus on the shift from paper to electronic filing, with changes in both terminology and procedure. Other notes:

The proposed rules revise the court’s approach to material deemed confidential. Parties will be able to designate up to 15 words in a brief “confidential” without needing to file a motion. More lengthy redactions require a motion “establishing that the additional confidentiality markings are appropriate and necessary pursuant to a statute, administrative regulation, or court rule.” (Rules 11(c), 17(e), 27(m), 28(d) and 30(h)).

Several of the proposed amendments add language relating to the Certificate of Interest, emphasizing the requirement that a Certificate of Interest be included when filing all motions, including motions for a stay or injunction pending appeal (Proposed Rules 8(a)(4) and 26.1). In addition, the proposed amendments add more language requiring that Certificates be amended promptly when information changes. (Rule 26.1 and 47.4(b)). As someone pointed out, though, the Federal Circuit Rules already require a Certificate of Interest to be filed with each motion, petition, or response. See Fed. Cir. R. 47.4. Rule 47.4(c) also requires that if any of the information changes, the party must file an amended certificate within 7 days of the change. Does anyone know why all the redundant language is being added in Rules 8(a)(4), 26.1 and 47?

The court’s own summary of the proposed changes is available here: summary_of_proposed_rule_changes_dec_2015, with a redlined version of the actual edits available here: federal_circuit_rules_public_notice_dec_2015. Given their scale, it’s difficult to get a sense of the changes from the summary alone. I encourage folks who regularly practice before the court to read through the changes carefully, both for substance and areas of potential unintended error. If there are any areas of potential ambiguity or overcomplexity, now is the time to point them out. Comments on any of the proposed changes are due to the court by January 4.

In addition, the court’s website notes that “Reviewers may wish to note that the recent amendments to Rule 28(a)(12) and 28(f), and Rule 30(b)(4)(E), relating to the pagination and marking of appendices and supplemental appendices are final with an effective date of January 4, 2016.” These rules apply to all appeals docketed on or after Monday, January 4, 2016.

The “best ever” case dealing with “printed matter” will at least expressly observe the unbreakable relationship between subject matter eligibility and this so-called “doctrine.” This case doesn’t do that. On the contrary, it completely glosses over the origins of the “doctrine” and only refers to its subject matter eligibility origins obliquely (without ever mentioning 101 or the phrase “subject matter eligibility”!!).

The CAFC also continues its proud tradition of pretending that the “functional relationship” “prong” of its “doctrine” has any discernable meaning other than “we like this claim.” Every time information is communicated, that information is peforming some kind of function.

All in all, I’d say this case is a better candidate for the worst “printed matter doctrine” case, particularly given its timing. The fact that the CAFC can’t expessly recognize the doctrine as a flavor of subject matter eligibility in 2015 is p a thetic.

Explains that it is the meaning of the “printed matter” that counts — its information content.

The case doesn’t “explain that”. It merely states something similar. The actual statement is the following: “The common thread amongst all of these cases is that printed matter must be matter claimed for what it communicates.” That statement, however, misses the point. All one needs to do is go to In re Ngai’s “recreational math device”. What were the digits on Ngai’s moebius band “communicating”?

At the very least, the CAFC should have done its readers a minimum kindness and state expressly that “printed matter” need not be “printed”. Why gloss over that point?

Here’s the junk d.o.a. claim at issue here (this one isn’t going anywhere, by the way — another fact that the CAFC should simply recognize rather than beating around the bush). The subject matter problem is real and it doesn’t go away just because the CAFC decides to limit a “doctrine” that is plainly a form of eligibility rejection.

A method of designing, by a user in a user interface having first and second display regions each capable of displaying a plurality of element [sic], an electronic document, comprising:

selecting a first element from a database including web assets authored by third party authors and web assets provided to the user interface or
outside the user interface by the user;

displaying the first element in the second display region;

interactively displaying the electronic document in the first display region;

modifying the first element displayed in the second display region upon receiving a first command to modify the first element in the second display
region; and

displaying the modified first element in the first display region, wherein the modified first element forms at least part of the electronic document.

Note that the bolded element is the only element missing from the prior art. The element is an abstraction, i.e., it’s a description of communicated information by the origin of that information, as opposed to its content. The key point is that it’s a non-structural distinction. For the purpose of performing a 101 analysis (and again: that’s what the printed matter doctrine is) there’s no principled distinction that can be drawn between an element that describes information according to its content and an element that does even less than that (e.g., the element in this case). That’s because abstract descriptions of the ownership or authorship of information “do not constitute any new and useful art,machine, manufacture, or composition of matter, or any new and useful improvements thereof.” (In re Russell, 48 F.2d 668, 669 (CCPA 1931) — from the same case that the CAFC teaches is the “modern” statement of the doctrine).

All this, of course, is setting aside the fact that the “web asset” in question — regardless of its origin — is surely printed matter being claimed “for what it communicates” (“what it communicates” = anything).

Prost, Taranto and Hughes should be ashamed of themselves. They’re just wasting the PTO’s time and in the process they’re wasting everyone else’s time. I don’t suppose it’s likely that the PTO will ask for a rehearing en banc but it certainly should. Everyone would be better off (except maybe for this junk applicant).

MM, printing on a medium, the first time it is done, is a new manufacture. Thereafter, if the only difference is in the meaning of the printing, then we have the printed matter doctrine.

But I agree with you here that defining something that differs from the prior art by being authored by a third party does seem to be abstract — based on information as opposed to being a physical characteristic. To suggest that such subject matter might be eligible and the sole defining characteristic over the art is wrong.

Do NOT try to obfuscate by the mere type of functionality and IG NORE the actual functionality.

As to differences in physical characteristics, let me repeat (again) that such COULD BE laid out in claims lasting tens and hundreds of (indecipherable) pages. But such is just neither helpful nor necessary when one reads claims according to the standard of a Person Having Ordinary Skill In The Art.

(by the way, your “logic” is also just like saying that any one molecule is EXACTLY alike any other molecule, seeing as each are merely put together with the same electrons, protons, and netrons, and using the same laws of nature)

But the worst is to purposefully dissemble about the nature of the invention for purely “philosophical/opinion/desired-end-state” reasons – as you, Ned, and the sAme host of posters do, yet again.

Alas, since the “sole defining characteristic is indeed (talking here at the 10,000 foot level and the concept of software and the law – and explicitly not “defending this C R P patent”), not one merely of authorship, but of functionality (software is indeed manufactured to have a utility, the very thing that the patent laws were meant to protect), we can plainly see that the strawman argument is a F A I L.

There’s another way to appreciate the absurdity of the CAFC’s “reasoning” here (actually many other ways but this one especially).

According to the CAFC’s “logic”, the claim at issue in In re McKee:

A principal cut of meat bearing a series of identifying marks in relatively close spaced relation and having their longitudinal axes arranged substantially parallel to the planes….

is anticipated by the prior art after application of “the printed matter doctrine”, but a claim such as the following would not, apparently, be anticipated:

A principal cut of meat bearing a series of identifying marks in relatively close spaced relation and having their longitudinal axes arranged substantially parallel to the planes wherein said identifying marks were not made by the meat buyer.

But wait! It gets better. According to the CAFC’s “logic”, this more limited claim would be anticipated after application of “the doctrine”:

A principal cut of meat bearing a series of identifying marks in relatively close spaced relation and having their longitudinal axes arranged substantially parallel to the planes wherein said identifying marks were made by a man or machine with a label stating “I am not the meat buyer”.

What’s the principled distinction between these claims that justifies these different results? The CAFC doesn’t say and, apparently, can’t even be bothered to try. Maybe the next time this case comes up to them on appeal they’ll realize they need to do a bit more than regurgitate 100 years of nonsense.

They don’t say and aren’t bothered to try because the director didn’t bother to argue what you are arguing. Instead, the director tried to state that the origin itself, as in the third party, or the man that isn’t the meat buyer in your example, was itself printed matter. Bizarre.

where the information came from, its “origin,” is not part of the informational content at all. Nothing in the claim calls for origin identification to be inserted into the content of the web asset. Therefore, the Board erred … in assigning the origin no patentable weight

And that, my friend, is complete and utter absurdity. What makes sense is that when you find that a “limitation” is “not part of something at all” (as the CAFC found here) then that limitation should not be given “patentable weight.” Any other result is a farce.

But this has been going on at the PTO for some time, hasn’t it? Yes, it has.

“What makes sense is that when you find that a “limitation” is “not part of something at all” (as the CAFC found here) then that limitation should not be given “patentable weight.””

The CAFC did not find that the limitation is “not part of something at all”. They found the limitation is not a part of the informational content. They find that it is a part of the method (or one of the steps in the method).

6: They found the limitation is not a part of the informational content. They find that it is a part of the method (or one of the steps in the method).

Show me where the CAFC held that third party authors would necessarily need to be named as defendants when this claim is asserted, in addition to the recited “user”. That’s what a responsible and competent appellate court would do if what you say is correct.

Here’s what page 4 states:

In performing the printed matter analysis, the Board concluded that “web assets’ origination from third party authors and the user cannot patentably distinguish (i.e.,
cannot breathe novelty into) the claimed method,

And that conclusion is correct. It’s one for the CAFC to engage in legal nitpickery for the sake of clarification. But here they engaged in nitpickery for the sake of increasing the amount of pollution in the case law. It’s the opposite of “judicial economy.”

Silliness like this: Although the selected web assets can and likely do communicate some information

The “web assets” exist to be “displayed”. That’s the whole purpose.

the content of the information is not claimed

Of course “the content” is claimed. The element in question covers all content except content that is authored by “the user.”

“Show me where the CAFC held that third party authors would necessarily need to be named as defendants when this claim is asserted, in addition to the recited “user”. That’s what a responsible and competent appellate court would do if what you say is correct.”

Nah bro. The claim need not involve the other party itself in the lawsuit because it’s just having content that is pre-existing but which was authored by a third party being involved.

Though I do like your angle on it, and you could definitely maybe argue that.

6: They don’t say and aren’t bothered to try because the director didn’t bother to argue what you are arguing.

No excuse. The director got hung up on the “printed matter doctrine” which — as everyone including the CAFC is surely aware — is just a flavor of ineligible subject matter.

Why didn’t this director make a straight up 101 argument? Answer: because the PTO is incompetent and/or willfully ign0rant of the issues. Why can’t they be bothered to figure this stuff out? Because it would hurt the fee-fees of some of the “shareholders” and the CAFC’s favorite patentees.

The nonsense will end very shortly if the CAFC and the PTO continue playing head-in-the-sand games with “the printed matter doctrine.” The CAFC needs to grow up and address the issues, regardless of whether the issues are framed in terms of some silly “doctrine” by some confused PTO “director.”

Ned: regarding the marks not made by the buyer, is this not a product by process sort of claim?

Does the “authored by a third party” limitation in the instant case turn the claim into a “product by process sort of claim”? I don’t think so.

Does infringement of the claim require collusion between the ‘third party author” and the web site host or user? I don’t think so.

Of course the applicant knows the answer to these questions. The applicant also knows that he hasn’t invented anything patent-worthy but he’ll never admit that because he’s just another patent tr0ll gearing up to file a frivolous lawsuit with a junk patent that the incompetent PTO granted him, with the CAFC’s willing assistance.

What was “before” the CAFC here was an incredible junky claim that the PTO properly tanked under a “doctrine” that is unquestionably a flavor of subject matter eligibility. Rather than dance around that fact and create confusion as it did here, the CAFC should own up to this fact, and clarify that the claim is junk under 101 for reasons that are indistinguishable from the reasons provided by the PTO.

While I somewhat agree with you on the nature of the exception, I’m not sure that they needed to take all those huge steps. Especially when they’re probably confuzzled about what is going on themselves.

Good point, and I’ve corrected the post. There seems to be a lot of redundancy with the certificate of interest language, though, making the rules even more unwieldy than they already were. I’m not clear why the additional language was added to Rule 47(b) when 47(c) already requires amendment.

Good point. The addition to 47(b) seems clearly redundant with 47(c). As far as I can tell, the point is to say “we really mean it.” More so than other circuits, companies in which judges are likely to own stock are frequently before the Federal Circuit, and this matters to them. That said, making the same point several times using different words is bad drafting.

Relatedly, I sometimes wonder what it would take to get courts of appeals to purge most of their unnecessary local rules. The DC Circuit and the Federal Circuit might deserve a bit more leeway because of their unique dockets, but many circuits’ local rules amount to idiosyncrasy for its own sake. Sisk, The Balkanization of Appellate Justice, 68 Colo L. Rev. 1 (1997) describes the problem well, but the situation doesn’t seem to have improved in the ensuing 18 years.